Trademark cases are not won on the day of the trial. Nor are they won on the day a killer lawsuit is served. As many experienced litigators will have learned, the groundwork for winning a trademark case begins years, sometimes decades, earlier.
Panelists in a session today on gathering evidence will underline the importance of pulling together and maintaining evidence for use in trademark litigation, well before litigation is contemplated. “You really can lose cases before IP offices and in the courts without sufficient evidence”, says Carsten Albrecht of FPS Fritze Wicke Seelig in Germany, who is moderating today’s session. “It is a good idea to collect evidence at as part of portfolio management”.
Longines v Staccata
The panelists will consider some high-profile cases where legal battles have been lost for want of proof of use of a trademark, or because of insufficient evidence of the use of a mark in a particular form.
One recent example is a dispute between Swiss watch maker Longines and Italy’s Staccata. The Swiss company objected to Staccato’s application to register a figurative mark that included a wings device along with the word QUARTODIMIGLIO. The objection was based on its own trademarks, some of which consisted solely of a wings device, and some of a wings device with the word LONGINES.
In February, the General Court in Luxembourg backed OHIM’s Board of Appeal, which had found that Longines had not succeeded in proving the existence of a reputation for its “winged hourglass” device on its own, independently of the mark LONGINES.
Types of evidence
So what kind of evidence should IP owners stockpile to prove their trademark claims? Albrecht suggests they build up evidence of use of at least the most important trademarks in their portfolio, bringing together packaging designs and labels as well as figures showing the amount spent on advertising.
“OHIM and the General Court also like to see copies of invoices showing the trademark,” he says.
Easy access to the evidence is important so that litigation teams can find, analyze and submit it within tight litigation timetables.
In a digital era, the job of evidence collection and archiving should be easier, allowing IP owners to keep records online and scan copies of documents and examples of packaging. But Albrecht says that while the German courts are relatively relaxed about the submission of scanned documents, the UK courts might be more suspicious. “British lawyers have told me that the courts in London might expect the parties to be able to produce witnesses to the scanning process. It is important to consider evidence gathering on a global basis”.
Another headache for trademark lawyers is the trend for IP owners to use their marks in dynamic ways. This trend is often driven by the marketing department, but their colleagues in the legal team should be aware of the potential problems that regular changes to the way the trademark is presented might have for litigation success down the line. “In Europe the IP owner needs to be able to show that the mark has been used in the registered form, or with only slight changes to it,” warns Albrecht.
The other members of the panel are Richard Groos of Norton Rose Fulbright in the United States, Paul Harris of Pillsbury Winthrop Shaw Pittman in the UK and Anna-Lena Wolfe of Tetra Pak in Sweden.
CT01 Gathering Evidence with In-house Counsel: Achieving Harmony and Avoiding Discord takes place from 10:15 am to 11:30 pm today.
